Bote LLC v. STeamBoat PaddleSports LLC

1. Case Identification

• Case #: IPR2024-00892
• Patent #: 9,862,466
• Filed: June 18, 2024
• Petitioner(s): Bote, LLC
• Patent Owner(s): Twitch LLC
• Challenged Claims: 1-20

2. Patent Overview

• Title: Inflatable Paddle Board
• Brief Description: The ’466 patent discloses an inflatable paddle board comprising a lower inflatable chamber that forms a stand-up board and a connected upper inflatable chamber that forms a rail around the lower chamber. The combination of chambers forms a curve-shaped front hull, and a "tent covering" may be included between them for added stability and shaping.

3. Grounds for Unpatentability

Ground 1: Claims 15-18 and 20 are obvious over Hoffmann in view of Swan and Hoge.

• Prior Art Relied Upon: Hoffmann (DE2612881), Swan (Application # 2014-0245943), and Hoge (Application # 2016-0096591).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Hoffmann taught a primary inflatable boat structure with a lower, surfboard-shaped floor (a "stand-up board") and connected upper inflatable gunwale tubes forming a rail and a curved bow. Swan and Hoge were cited to teach that drop-stitched floors, like Hoffmann’s, were well-known for use as stand-up paddle boards, making Hoffmann’s floor inherently suitable for this purpose. For the "tent covering" limitation, Petitioner asserted that Swan taught a bottom member stretched between its chambers and Hoge taught a fabric floor, both meeting the claim term.
  • Motivation to Combine: A POSITA would combine Hoffmann's inflatable boat design with the stand-up paddle board floors of Swan or Hoge to create a more stable, buoyant watercraft suitable for standing, as this was a known application for such floors. Modifying Hoffmann with the protective tent coverings of Swan or Hoge was argued to be a simple addition to protect against punctures, a predictable design choice.
  • Expectation of Success: Combining these known elements—inflatable boat structures and drop-stitch paddle board floors—involved standard manufacturing techniques (e.g., gluing, welding) and would have yielded predictable results in improved stability and functionality.

Ground 2: Claims 1-3, 5, and 7-14 are obvious over Hoffmann in combination with Airhead, Scadden, Swan, and Hoge.

• Prior Art Relied Upon: Hoffmann (DE2612881), Airhead SS (an archived 2015 website review), Scadden (Patent 8,438,985), Swan (Application # 2014-0245943), and Hoge (Application # 2016-0096591).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon Ground 1, adding Airhead and Scadden to address specific dependent claim limitations. For the limitation of the first chamber "overhanging" the second (claim 5), Petitioner argued that while Hoffmann did not explicitly show this, the Airhead SS paddle board provided clear photographic evidence of a main chamber overhanging side chambers to improve performance. For the limitation of interconnecting chambers with a single fill valve (claim 1e), Petitioner pointed to Scadden, which explicitly disclosed interconnecting its pontoons and platform to be filled through a single valve.
  • Motivation to Combine: A POSITA would modify Hoffmann’s design based on Airhead to extend the main stand-up floor rearward, overhanging the side tubes, to improve tracking and performance in choppy water, a known benefit. A POSITA would also incorporate Scadden’s single-valve inflation system into the Hoffmann design to simplify and speed up inflation, a straightforward improvement for user convenience.
  • Expectation of Success: These modifications were presented as routine design choices using known components. Extending an inflatable chamber or connecting chambers to a single valve were uncomplicated mechanical adjustments that would have predictably improved performance and usability.

Ground 5: Claims 15-18 and 20 are anticipated by Swan.

• Prior Art Relied Upon: Swan (Application # 2014-0245943).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner contended that Swan disclosed every element of independent claims 15, 18, and 20. Swan was argued to teach an inflatable paddle board with a lower, drop-stitch inflatable chamber (paddleboard 8) forming a stand-up board. Swan’s inflatable side tubes (2) were asserted to be an upper inflatable chamber connected to the lower chamber, forming a rail around it. The combination of the paddleboard and the side tubes curving at the front formed the claimed curve-shaped front hull. Finally, Swan’s bottom member (6), bow cover (20), and inflatable thwart (7) were each identified as disclosing the "tent covering" element.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including Ground 3 (claims 4, 6) adding Hobie iSeries to the Ground 2 combination for overhang teachings, and Ground 4 (claim 19) over Hoffmann, Swan, and Scadden for under-hang teachings.

4. Key Claim Construction Positions

• "stand-up board": Petitioner proposed this term be construed as “a generally elongated board (like a surf board) that a user can stand upon and use a paddle to maneuver over the water.” This construction was argued to align with the plain meaning and the patent’s description of the lower chamber’s shape and function.
• "rail": Petitioner proposed this term be construed as “structure extending along at least a portion of the peripheral sides of the paddleboard.” This construction was based on extrinsic evidence defining the term in the context of paddle boards and was argued to be consistent with the patent’s use of a "rail chamber."
• "tent covering": Petitioner proposed this term be construed as “a sheet of material covering one or more objects to provide a shape over or between such objects.” This broad construction was based on dictionary definitions and the patent’s disclosure that the tenting material provides a "hull" or "rail" shape.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise discretionary denial under Fintiv. Petitioner stipulated that if the IPR is instituted, it will not pursue in the parallel district court proceeding the same grounds raised in the petition. Further, it was noted that the parallel litigation was in its earliest stages, with the complaint having been filed just over a month prior, no case schedule entered, and no trial date set.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of the ’466 patent as unpatentable.